Densys LTD.Download PDFPatent Trials and Appeals BoardMay 20, 2021IPR2021-00236 (P.T.A.B. May. 20, 2021) Copy Citation Trials@uspto.gov Paper No. 12 571-272-7822 Date: May 20, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ 3SHAPE TRIOS A/S and 3SHAPE A/S, Petitioner, v. DENSYS LTD., Patent Owner. ____________ IPR2021-00236 Patent 6,402,707 B1 ____________ Before LYNNE H. BROWNE, ULRIKE W. JENKS, and RICHARD H. MARSCHALL, Administrative Patent Judges. JENKS, Administrative Patent Judge. DECISION Denying Institution of Inter Partes Review 35 U.S.C. § 314(a) IPR2021-00236 Patent 6,402,707 B1 2 I. INTRODUCTION 3Shape Trios A/S, 3Shape A/S, 3Shape Inc., 3Shape Holding A/S, and 3Shape Poland sp. z.o.o. (“Petitioner”) filed a Petition requesting an inter partes review of claims 1, 2, 16, 18, 19, 21–24, 32, 34–38, 52, 54, 55, 57, 59, 60, and 63–68 (“the challenged claims”) of U.S. Patent No. 6,402,707 B1 (Ex. 1001, “the ’707 patent”). Paper 3 (“Pet.”). Densys Ltd. (“Patent Owner”) filed a Preliminary Response to the Petition. Paper 7 (“Prelim. Resp.”). With our prior authorization, Petitioner filed a Reply. Paper 9 (“Reply”); Ex. 3001. Also, with our prior authorization, Patent Owner filed a Sur-reply. Paper 11 (“Sur-reply”); Ex. 3001. Having considered the arguments and evidence of record, and for the reasons explained below, we exercise our discretion under 35 U.S.C. § 314(a) and deny institution of inter partes review. A. Related Proceedings The parties identify the following matter in which the ’707 patent has been asserted: Densys Ltd. v. 3Shape Trios A/S et al., Civil Action No. 6:19- cv-00680 (W.D. Tex.). Pet. 2; Paper 5, 2. B. The ’707 Patent (Ex. 1001) The ’707 patent is titled “Method and System for Real Time Intra- orally Acquiring and Registering Three-dimensional Measurements and Images of Intra-oral Objects and Features.” Ex. 1001, (54). The ’707 patent issued from Application No. 09/605,679 (“the ’679 application”), filed June 28, 2000. Id. at (21), (22). The ’707 patent relates to non-x-ray based imaging with the main benefit to obtain highly accurate and precise realistic measurements, images, IPR2021-00236 Patent 6,402,707 B1 3 and spatial maps of intra-oral objects and features such as teeth, gum, intra- oral soft tissue, bone matter, dental undercuts, dental fixtures, and prostheses of any kind. See id. at 1:15–30, 9:5–8. The ’707 patent describes using an intra-oral fixed global registration position inside the oral cavity of the dental patient for acquiring and recording the global position of the imaging device relative to the intra-oral fixed global registration position for forming a globally recorded three-dimensional measurement and image of the intra- oral objects. See id. at 9:13–32. The ’707 patent explains that by using the same intra-oral fixed global registration position the three-dimensional measurement and imaging data can be merged more efficiently by “at least minimizing, propagation errors related to the piecing and merging” of information to obtain panoramic measurements and images. Id. at 10:22–24. C. Illustrative Claim Claims 1 and 37 are the independent claims challenged by Petitioner in this proceeding. Independent claim 1 of the ’707 patent is illustrative and reproduced below: 1. A method for real time intra-orally acquiring and registering three-dimensional measurements and images of intra-oral objects and features, the intra-oral objects and features are located inside the oral cavity of a dental patient, comprising the steps of: (a) establishing an intra-oral fixed global registration position inside the oral cavity of the dental patient, said intra-oral fixed global registration position is definable in terms of global coordinate space of the oral cavity, said global coordinate space is associated with a fixed global reference coordinate system, said global coordinate space includes a plurality of intra-oral local coordinate spaces in the oral cavity; IPR2021-00236 Patent 6,402,707 B1 4 (b) providing a measuring and imaging device for measuring and imaging the intra-oral objects and features located in the oral cavity; (c) selecting a field of view of said measuring and imaging device located at a global position in said global coordinate space of the oral cavity; (d) acquiring at least one three-dimensional measurement and image of the intra-oral objects and features located in said selected field of view of said measuring and imaging device, and, recording said global position of said measuring and imaging device relative to said intra-oral fixed global registration position, for forming at least one globally recorded three-dimensional measurement and image of the intra-oral objects and features located in the oral cavity; (e) repeating step (c) and step (d) for a plurality of said global positions and a plurality of said fields of view of said measuring and imaging device, for forming a plurality of said globally recorded three- dimensional measurements and images of the intra- oral objects and features located in the oral cavity of the dental patient; and (f) registering local coordinate space pixel positions in each of said plurality of globally recorded three dimensional measurements and images with corresponding global coordinate space pixel positions, for forming a plurality of the three-dimensional measurements and images of the intra-oral objects and features located in the oral cavity of the dental patient which are registered relative to same said intra-oral fixed global registration position. Ex. 1001, 24:30–25:7. Claim 37, the only other independent claim, is directed to a system for acquiring intra-oral three-dimensional measurements and images in real-time. Id. at 29:39–59. IPR2021-00236 Patent 6,402,707 B1 5 D. Prior Art and Asserted Ground Petitioner asserts that claims 1, 2, 16, 18, 19, 21–24, 32, 34–38, 52, 54, 55, 57, 59, 60, and 63–68 are unpatentable based on the following ground. Claims challenged 35 U.S.C. § References/Basis 1, 2, 16, 18, 19, 21–24, 32, 34–38, 52, 54, 55, 57, 59, 60, 63–68 103 Rubbert,1 Fright2 Petitioner also relies upon the declaration of Parris Egbert, Ph.D. (Ex. 1003) to support its contentions. II. ANALYSIS Patent Owner urges the Board to exercise discretion to deny institution of inter partes review under 35 U.S.C. § 314(a) because of the advanced state of a parallel litigation pending in a district court. Prelim. Resp. 1. Specifically, Patent Owner asserts that a complaint involving the’707 patent was asserted over 15 months ago. “In that case, final infringement and invalidity contentions have already been exchanged, claim construction briefs have been submitted, a Markman hearing was held on August 31, 2020 and a final claim construction order was issued, and a jury trial has been set.”3 Id. (citation omitted).“Given the current posture and 1 WO 98/10243 published March 12, 1998. Ex. 1005. An English translation of WO 98/10243 is provided (Ex. 1006) and relied upon throughout the Petition. 2 WO 96/10205 published April 4, 1996. Ex. 1007. 3 The trial date was set for June 21, 2021 but has now been postponed to October 12, 2021. See Ex. 1020; Ex. 1021; Ex. 2008. IPR2021-00236 Patent 6,402,707 B1 6 schedule of the underlying District Court Litigation,” Patent Owner urges us to deny institution. Id. at 1–2 (citing Apple Inc. v. Fintiv, Inc., IPR2020- 00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”)). Petitioner disagrees. Pet. 68–70; Reply 1–3. A. Legal Standards 35 U.S.C. § 314(a) states that [t]he Director may not authorize an inter partes review to be instituted unless the Director determines that the information presented in the petition filed under section 311 and any response filed under section 313 shows that there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition. This language of section 314(a) provides the Director with discretion to deny institution of a petition. See Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016) (“[T]he agency’s decision to deny a petition is a matter committed to the Patent Office’s discretion.”); Consolidated Trial Practice Guide November 2019 (“TPG”)4 at 55. In exercising the Director’s discretion under 35 U.S.C. § 314(a), the Board may consider “events in other proceedings related to the same patent, either at the Office, in district courts, or the ITC.” TPG at 58. The Board’s precedential NHK Spring decision explains that the Board may consider the advanced state of a related district court proceeding, among other considerations, as a “factor that weighs in favor of denying the Petition under § 314(a).” NHK Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018- 00752, Paper 8 at 20 (PTAB Sept. 12, 2018) (precedential). 4 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2021-00236 Patent 6,402,707 B1 7 The Board’s precedential Fintiv decision identifies several factors that balance considerations of system efficiency, fairness, and patent quality when a patent owner raises an argument for discretionary denial due to the advanced state of a parallel proceeding, such as the related litigation here. Fintiv, Paper 11 at 5–6. These factors are: 1. whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted; 2. proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision; 3. investment in the parallel proceeding by the court and the parties; 4. overlap between issues raised in the petition and in the parallel proceeding; 5. whether the petitioner and the defendant in the parallel proceeding are the same party; and 6. other circumstances that impact the Board’s exercise of discretion, including the merits. Id. We now consider these factors to assess whether we should exercise discretion to deny institution under 35 U.S.C. § 314(a). “[I]n evaluating the factors, the Board takes a holistic view of whether efficiency and integrity of the system are best served by denying or instituting review.” Id. at 6. B. Fintiv Factors In determining whether to institute trial in this proceeding, we consider each of the factors set forth in Fintiv below. Factor 1: whether the court granted a stay or evidence exists that one may be granted if a proceeding is instituted Petitioner asserts that they “anticipate requesting a stay of the Related Litigation pending this IPR.” Pet. 69. Patent Owner asserts that Petitioner IPR2021-00236 Patent 6,402,707 B1 8 “has not asked for a stay pending inter partes review, and there is no evidence that Judge Albright would grant a stay even if an IPR were instituted.” Prelim Resp. 5 (citing Ex. 2003). We agree with Patent Owner that analysis of this factor requires speculation. As such, we determine that the facts underlying this factor are neutral. Factor 2: proximity of the court’s trial date to the Board’s projected statutory deadline for a final written decision Patent Owner asserts that the district court trial is set to “commence on October 12, 2021, i.e. approximately 8 months before the Board’s projected statutory deadline for a final written decision.” Sur-reply 1 (emphasis omitted); see Prelim Resp. 8. Petitioner contends that the October trial date is uncertain and speculative. Reply 3 (citing Ex. 1021, 1). Petitioner contends that “the District Court granted a joint request by the parties to postpone trial for 120 days.” Reply 2 (citing Ex. 1020). Patent Owner responds that “the correspondence with the District Court is clear that the sole purpose of the extension relates to Petitioners’ preference to not have their witnesses appear by remote video link.” Sur-reply 1 (citing Ex. 1020). Patent Owner asserts that it is clear that “Petitioner’s trial counsel is relying on the scheduled October 12, 2021 trial date in proposing deadlines over the next few months for the upcoming trial-related dates in the case.” Sur-reply 3 (citing Ex. 2008). On the record before us, both parties are proceeding as if trial will begin in October and would thereby conclude at least seven months before a final written decision in this proceeding would be due. See Ex. 2008, 1; Ex. 1021, 1. We understand that Petitioner’s fact witnesses and corporate IPR2021-00236 Patent 6,402,707 B1 9 representatives who reside in Denmark wish to participate in the district court proceedings in person. Ex. 1020. The uncertainty surrounding current international COVID-19 restrictions and the lack of guidance when these restrictions may be lifted raises doubt whether the trial will commence in October as currently scheduled. As such, we determine that the facts underlying this factor are neutral. Factor 3: investment in the parallel proceeding by the court and the parties Patent Owner asserts that significant investment has been made in the district court proceedings and that the trial is set to start on October, 12, 2021, which is approximately eight months before the Board’s projected statutory deadline. Sur-reply 1; see Prelim Resp. 11. Petitioner asserts that the Board has declined to exercise discretion to deny institution even when significant investment has been made in related litigation. Pet. 68. Patent Owner explains that claim construction briefing and arguments are complete, and that the District Court held a Markman hearing on August 31, 2020 and issued a final claim construction order. Prelim Resp. 1, see also id. at 11 (citing Fintiv, Paper 11 at 14, and Google LLC, v. Uniloc 2017, IPR2020-00115, Paper 8 at 7 (PTAB Mar. 27, 2020)). In addition, Patent Owner asserts that fact discovery and expert discovery are now also complete. Sur-reply 3; see Prelim Resp. 9–11. Patent Owner further contends that Petitioner’s delayed filing of the Petition contributed to the parties’ significant investment in the district court litigation. See Prelim. Resp. 9–12. IPR2021-00236 Patent 6,402,707 B1 10 We agree with Patent Owner. As Patent Owner has identified, the District Court has held a Markman hearing, issued a final claim construction order, and fact and expert discovery is complete. Prelim. Resp. 1, 9–11; Sur- reply 3. Furthermore, Patent Owner served Petitioner with its preliminary disclosure of asserted claims and infringement contentions on March 19, 2020. Ex. 2002, 1. Petitioner filed its Petition in this proceeding approximately eight months later, on November 25, 2020, before filing its invalidity contentions in the district court on December 18, 2020. Pet. 72; Prelim Resp. 1; Ex. 2002, 3. Accordingly, the substantial investment in the parallel District Court weighs in favor of exercising discretion to deny institution of inter partes review and Petitioner has not presented evidence of diligence in filing its Petition. 5 On the record before us, in light of the advanced state of the district court proceeding, and the investment by the court and parties, and Petitioner’s failure to provide evidence of diligence in filing the Petition, we determine that this factor weighs in favor of exercising our discretion to deny institution. Factor 4: overlap between issues raised in the petition and in the parallel proceeding Patent Owner asserts that Petitioner’s “IPR Petition alleges invalidity of the exact same claims asserted in the District Court litigation based on the 5 Petitioner alerted the panel of a recent Board decision: Facebook, Inc. v. USC IP Partnership, L.P., IPR2021-00033, Paper 13 at 13 (PTAB Apr. 30, 2021). We agree with Patent Owner’s position that Facebook has not changed the law and therefore denied further briefing. See Ex. 3002. IPR2021-00236 Patent 6,402,707 B1 11 identical combination of two references that it has relied on in the District Court litigation.” Prelim. Resp. 12 (citing Ex. 2005). Petitioner does not deny that there is overlap. In the Petition, however, Petitioner stipulates that “if the IPR is instituted, Petitioner[] will not pursue the same ground presented in this Petition in the Related Litigation.” Pet. 69 (citing Sand Revolution II, LLC v. Cont’l Intermodal Grp.–Trucking LLC, IPR2019-01393, Paper 24 at 11-12 (PTAB June 16, 2020) (informative) (“Sand Revolution”)). Patent Owner asserts that Petitioner’s stipulation is insufficient because it only limits Petitioner “from pursuing ‘the same ground presented in [the] Petition in the Related Litigation.’” Prelim. Resp. 15 (citing Pet. 69). In the related district court litigation, Petitioner asserts Rubbert and Fright alone or in further combination with any one of 39 other references renders the claims of the ’707 patent obvious. See Ex. 2005,6 4 (“[T]o the extent that Rubbert and Fright does not disclose a particular limitation of the claims, it would have been obvious to combine the teachings of Rubbert and Fright with (1) the knowledge of a person of ordinary skill in the art and/or (2) any of the prior art references identified above to show each and every limitation of the asserted claims.”). Patent Owner asserts that the stipulation “has failed to avoid using any grounds that are ‘raised or could have been reasonably raised in an IPR’ in its stipulation.” Prelim Resp. 15 (emphasis omitted) (citing Google v. AGIS Software Dev., LLC, IPR2020-00871, Paper 16 at 15 (PTAB Nov. 25, 2020)). Based on Petitioner’s invalidity disclosures, we agree with Patent 6 See Prelim Resp. iv (Ex. 2005: Appendix A-10 to 3Shape’s Final Invalidity Contentions filed in Densys Ltd. v. 3Shape Trios A/S and 3Shape A/S, No. 6:19-cv-00680-ADA). IPR2021-00236 Patent 6,402,707 B1 12 Owner that Petitioner’s stipulation is too narrow to clarify that it will not pursue any ground that could have reasonably been raised in an IPR. A broader stipulation might better address concerns regarding duplicative efforts and potentially conflicting decisions. Nevertheless, Petitioner’s stipulation does minimize the overlap between this proceeding and the litigation to some extent. Sand Revolution, IPR2019-01393, Paper 24 at 11– 12. Thus, this factor marginally weighs against denying institution. Factor 5: whether the petitioner and the defendant in the parallel proceeding are the same party Patent Owner asserts that “3Shape is both the petitioner here and the defendant in the District Court Litigation.” Prelim. Resp. 16; Ex. 2001. Petitioner does not provide a response with respect to this factor. On the record before us, we determine that Petitioner here is the defendant in the parallel proceeding, which when viewed in the context of the other facts in this case, weighs in favor of denying institution. Factor 6: other circumstances that impact the Board’s exercise of discretion, including the merits Patent Owner asserts that institution would “give rise to substantial duplication of efforts. As noted above, it will not prevent fact discovery, expert discovery, and other disputes that occur in the District Court Litigation, nor obviate dispositive motions, pre-trial motions, or a trial.” Prelim. Resp. 17. Petitioner contends that “the challenged claims of the ’707 Patent were allowed without any prior art rejection or any meaningful prior art analysis,” and that Rubbert and Fright were not considered during prosecution. Pet. 69. Petitioner assert that “[g]iven the strength of this Petition’s merits, this factor weighs in favor of institution.” Id. We determine that the facts underlying this factor are neutral. IPR2021-00236 Patent 6,402,707 B1 13 C. Holistic Analysis of Fintiv Factors We undertake a holistic analysis of these factors, considering “whether efficiency and integrity of the system are best served by denying or instituting review.” Fintiv, Paper 11 at 6. In this case, the factors weighing in Patent Owner’s favor of exercising our discretion to deny institution outweigh facts that may support institution. A balancing of the facts and circumstances as discussed above leads us to conclude, on this record, that the inefficient duplication of efforts here is likely. Accordingly, we determine that the circumstances presented weigh in favor of denying institution under 35 U.S.C. § 314(a). III. CONCLUSION Taking account of the information presented in the Petition, the Preliminary Response, the Reply, the Sur-reply, and the evidence of record, we exercise our discretion under 35 U.S.C. § 314(a) and deny institution. We, therefore, do not institute an inter partes review. IV. ORDER In consideration of the foregoing, it is hereby: ORDERED that the Petition is denied as to all challenged claims, and no trial is instituted. IPR2021-00236 Patent 6,402,707 B1 14 For PETITIONER: Todd Walters Roger Lee Adam Banes BUCHANAN INGERSOLL & ROONEY PC todd.walters@bipc.com roger.lee@bipc.com adam.banes@bipc.com For PATENT OWNER: Oded Burger Chandran Iyer DAIGNAULT IYER LLP oburger@daignaultiyer.com cbiyer@daignaultiyer.com Copy with citationCopy as parenthetical citation